USPTO Patents Application 10750653

REMARKS:

Claims 1-10 are pending in the application. Of these, claims 6-10 have been
withdrawn. In the Office Action dated November 3, 2005, The Examiner rejected claims 1,
2, and 4 under 35 U.S.C, 102(b) as being anticipated by Herring, Jr. et al, rejected claims 1
and 2 under 35 U.S.C. 102(a) as being anticipated by Bisonnette, rejected claims 3 and 5
under 35 U.S.C. 103(a) as being unpatentable over Herring, Jr. et al, and rejected claim 4
under 35 U.S.C. 103(a) as being unpatentable over Herring, Jr. et al in view of Sweeny.
These rejections are respectfully traversed.

In this amendment, claim 1 has been amended to include the subject matter of original
claim 5. Claim 5 has been canceled. No new matter was added.

Regarding the rejection of original claim 5, amended claim 1, the Examiner alleged
that applying phosphates and electrodeposited layers on automotive panels in well-known
and conventional in the automotive arts. This reliance on "well-known" prior art is
respectfully traversed. The facts asserted to be well known are not capable of instant and
unquestionable demonstration as being well-known (see MPEP 2 144.03 A). There must be
some form of evidence in the record to support an assertion of common knowledge (see
MPEP 2144.03B) and the Examiner is respectfully requested to produce authority for her
statement.

Further as to the rejection of the original claim 5, the Examiner also alleged that it
would have been obvious to one of ordinary skill in the art at the time the invention was made
to apply either a phosphate layer or an electrodeposited layer to the car panels of Herring, Jr.
et al. The Examiner did not, however, address the limitation that the inventive at least one
layer is formed in the gap . The inventive at least one layer is disclosed in the specification as
providing improved anti-corrosion characteristics of the inner and outer panels in the gap (see
at least paragraph [0029]). There is no suggestion in the prior art to provide a phosphate
and/or electrodeposition layer in the gap .

For at least these reasons, amended claim 1, as well as its dependents, claims 2-4, is
patentable over Herring, Jr. et al. All other rejections are rendered moot by the patentability
of the sole independent claim, amended claim 1.

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In view of the foregoing, Applicant believes all claims now pending in tliis
application are in condition for allowance. The issuance of a formal Notice of Allowance is
respectfully requested.

Authorization is granted to charge any outstanding fees due at this time for the
continued prosecution of this matter to Morgan, Lewis & Bockius LLP Deposit Account No.
50-0310 (matter no. 060944-0156).

Respectfully submitted.

February 3. 2006

Jessica C. Stahnke (Reg. No. 57,570)
for

Thomas D. Kohler (Reg. No. 32,797)

MORGAN, LEWIS & BOCKIUS LLP
One Market, Spear Street Tower
San Francisco, CA 94105

Date

415.442.1000

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